Outdry Technologies Corp. v. Geox S.P.A.
859 F.3d 1364
| Fed. Cir. | 2017Background
- The ’171 patent claims a method of waterproofing leather by "directly pressing" a semi-permeable membrane to the leather using a discontinuous (dotted) glue pattern with specified dot density (50–200 dots/cm2) or dot diameter (0.1–0.8 mm).
- The Patent Trial and Appeal Board (PTAB) held claims 1–15 obvious over a combination of Thornton (disclosing a waterproof breathable glove with adhesive dots securing a membrane), Scott (text discussing low adhesive dot coverage to preserve micropores), and Hayton (disclosing adhesive-dot ranges and densities for sock barriers).
- The Board construed "directly pressing" to mean applying pressure without intervening layers other than the adhesive and found Thornton disclosed the claimed "directly pressing" process and general waterproofing-for-leather limitation.
- The Board found a motivation to combine Thornton with Scott and Hayton to optimize adhesive dot size/density so as to maintain vapor permeability while ensuring adhesion.
- Outdry appealed, arguing (1) the Board mis-construed "directly pressing" and (2) the Board failed to adequately explain a motivation to combine the prior art to reach the claimed ranges. The Federal Circuit affirmed.
Issues
| Issue | Outdry's Argument | Geox/PTAB's Argument | Held |
|---|---|---|---|
| Claim construction of "directly pressing" | Should require uniform, sealed contact preventing any water cushion (constant contact between membrane and leather) | "Directly pressing" means applying pressure without intervening materials/layers other than the adhesive (BRI) | Affirmed the PTAB: BRI construction adopted; Outdry’s narrower requirement lacked specification support |
| Whether Thornton discloses a "process for waterproofing leather" | Thornton does not disclose waterproofing leather as claimed if direct pressing requires uniform sealed contact | Preamble is not a separate limitation; satisfying claimed steps yields waterproofing | Affirmed: preamble not a separate limitation; Thornton disclosure sufficed under the claim construction |
| Motivation to combine Thornton with Scott and Hayton | PTAB relied only on petitioner’s arguments and failed to identify a reason tied to the ’171 patent problem (water cushions) | PTAB adopted petitioner’s evidentiary arguments: Scott/Hayton teach adhesive dot sizes/densities to preserve vapor permeability while bonding layers; skilled artisan would combine these teachings with Thornton | Affirmed: PTAB gave a reasoned, evidence-supported explanation; substantial evidence supports motivation to combine |
| Whether the obviousness analysis improperly limited motivation to the patentee’s stated problem | The Board should have been confined to the specific problem addressed in the patent | A motivation to combine may be broader; KSR permits other motivations a skilled artisan would have had | Affirmed: motivation need not match the patentee’s stated problem; other rationales supported combining references |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness analysis not confined to formalistic TSM; broader motivations allowed)
- In re Cuozzo Speed Techs., LLC, 793 F.3d 1268 (2015) (BRI standard in IPRs; claim construction review rules)
- Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064 (2015) (standard of review for Board’s factual findings and legal determinations)
- In re NuVasive, Inc., 842 F.3d 1376 (2016) (Board must give an explanation-supported finding of motivation to combine)
- Rovalma, S.A. v. Böhler-Edelstahl GmbH & Co. KG, 856 F.3d 1019 (2017) (vacatur where Board failed to cite record evidence supporting motivation to combine)
- Icon Health & Fitness, Inc. v. Strava, Inc., 849 F.3d 1034 (2017) (attorney argument is not evidence; Board must explain why it credits a party’s argument)
- Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339 (2003) (preamble usually not a claim limitation)
- Bowman Transp., Inc. v. Ark.-Best Freight Sys., Inc., 419 U.S. 281 (1974) (agency decisions upheld when the agency’s path can reasonably be discerned)